Hot Topics in Design Patent Law

Perry J. Saidman | Saidman Design Law Group, LLC

Perry Saidman is a recognized pioneer in design law. He has more than 40 years of experience providing strategic advice and design protection and enforcement strategies. His expertise in design patent prosecution issues facilitates resolution of difficult or unusual cases. In 1988 he litigated the seminal design patent infringement case Avia Group Int’l. v. L.A. Gear Cal. Inc., 853 F.2d 1557 (Fed. Cir.). Over the years he has authored notable appellate briefs, including as amicus curiae on behalf of Apple Inc. in the Federal Circuit’s 2008 en banc decision of Egyptian Goddess v. Swisa, and in the Federal Circuit’s 2014 case Apple v. Samsung. When the U.S. Supreme Court granted certiorari in that case, he penned an amicus curiae brief on behalf of 14 companies regarding the total profit rule of 35 U.S.C. § 289.

As a prolific author and speaker, and in his private practice, Perry takes on many seemingly intractable design law issues of the day, including functionality, anticipation, obviousness, infringement and damages. He is very active in bar associations, including the Design Rights Committee of the IPO, INTA’s Design Rights Committee, and AIPLA’s Industrial Designs Committee which he founded in 1989. He has taught Design Law as an adjunct professor at G.W. Law School, and testified before the House Judiciary Committee regarding the auto replacement parts bill. His most recent papers involve the hot button issues of design patent anticipation, the written description requirement under sec. 112, functionality, and determining the article of manufacture under 35 U.S.C. 289. He also authors a blog at designlawperspectives.com covering recent design law cases and happenings.

I. The law of design patent obviousness stands to be turned on its head if the longstanding In re Rosen case is overturned | 2:00pm – 2:15pm

II. Comparison prior art could be limited to the same article of manufacture as the patented and accused designs | 2:15pm – 2:30pm

III. Infringers’ use of logos on their accused products could become an easy escape hatch for avoiding infringement | 2:30pm – 2:45pm

IV. Tips will be provided for maximizing total profit damages for design patentees | 2:45pm – 3:00pm